UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

PRIORITY ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.  This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

Serial Number  76/553910

 

The following issues were discussed in communication with V. T. GIORDANO on May 27, 2004.

 

Trademark Act Section 2(d) Refusals to Register in International Class 25

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods, so resembles the marks in U.S. Registration No. 759,711; 1,096,109; and 2,353,439 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registrations.

 

The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion.  First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely.  In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).  TMEP §§1207.01 et seq. 

 

In the instant case, the applicant seeks registration of MERCEDES in typed form for clothing, footwear and headgear.  The cited registered marks are MERCEDES in typed form for men’s and women’s sweaters, suits and top coats; MERCEDES BY ENRO in stylized form for men’s and women’s shirts, sweaters, suits and top coats; and MERCEDES and design for men’s shirts, pajamas, and ladies’ blouses.

 

The applicant’s mark and the mark in U.S. Registration No. 1,096,109 are identical.  The applicant’s mark and the other marks are highly similar in sound, appearance and commercial impression with the shared use of the term MERCEDES.  When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services.  Therefore, the word portion is controlling in determining likelihood of confusion.  In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976); TMEP §1207.01(c)(ii).

 

When determining whether there is a likelihood of confusion under Section 2(d), the question is not whether people will confuse the marks, but rather whether the marks will confuse the people into believing that the goods they identify emanate from the same source.  In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (C.C.P.A. 1972).  For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The question is whether the marks create the same overall impression.  Visual Information Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).

 

In addition, the goods of both parties are clothing.  The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  Instead, they need only be related in some manner, or the conditions surrounding their marketing be such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods and/or services come from a common source.  In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i).

 

The presumption under Trademark Act Section 7(b), 15 U.S.C. §1057(b), is that the registrant is the owner of the mark and that use of the mark extends to all goods and/or services identified in the registration.  The presumption also implies that the registrant operates in all normal channels of trade and reaches all classes of purchasers of the identified goods and/or services.  RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964-5 (TTAB 1980).

 

Therefore, with the contemporaneous use of the proposed mark with the cited registered marks, consumers are likely to reach the mistaken conclusion that the goods are related and originate from a common source.

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

Identification of Goods

 

The identification of goods is unacceptable as indefinite.  The applicant may adopt the following identification, if accurate: 

 

International Class 6:  “Metal key rings”;

 

International Class 9:  “Apparatus for recording, transmission or reproduction of sound or images, namely, ­­­­­­_______ [specify common commercial name of each item, i.e., video tape recorders]; blank magnetic data carriers, recording discs, in particular cassettes, tapes, compact discs, videocassettes all featuring information in the field of _____ [specify subject matter], data processing equipment, namely, data processors  and computers; software stored on data carriers  [specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use]; sunglasses, spectacles, spectacle frames; spectacle cases; compasses; fire-extinguishing apparatus, namely, fire extinguishers”

 

The wording “scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking, lifesaving, safety and teaching apparatus, equipment and instruments; apparatus and instruments for conducting, switching, transforming, recording, regulating and controlling electricity” in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.

 

International Class 14:  “Precious metals and their alloys; jewelry; precious stones; horological and chronometric instruments, namely, chronographs for use as watches; watch accessories, namely, cases for watches, watch straps of metal, leather or plastic; watch chains; cufflinks”; 

 

The wording “goods in precious metals or coated therewith, not included in other classes” in identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.

 

International Class 16:  “Paper, cardboard and goods made from these materials, namely, _____ [specify each item, i.e., cardboard boxes]; paper hand towels, paper serviettes, paper packaging container and bags of paper; stationery; adhesives for stationery or household purposes; artists' materials, namely, paint brushes; photographs; printed matter, namely, _____ [specify]; pictures, posters, brochures and magazines in the field of _____ [specify subject matter], writing implements and office articles, namely, ballpoint and fountain pens; pencils and colored pencils; paper conference bags; paper note-blocks, postcards, calendars, telephone and address books, ticket dispensers, transfers [indicate type, e.g., iron-on, plastic], paper transparencies, letter openers, packaging made of plastic, namely, bags”;

 

International Class 18:  “Leather and imitation leather sold in bulk; handbags, briefcases, small leather goods, namely, purses, attaches cases, key cases; trunks and traveling bags; umbrellas, parasols, walking sticks”;

 

International Class 20:  “Leather key holders”;

 

International Class 24:  “Woven and textile goods, namely, _____ [specify each item, i.e., place mats, napkins]: textile hand towels, textile bath towels, cloth flags, printed textile labels”;

 

The wording “travel covers” in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.

 

International Class 25:  “Clothing, namely,  _____ [specify each item, i.e., t-shirts, pants], footwear, headgear, namely, ______ [specify type, e.g., hats, caps]”;

 

International Class 28:  “Games and playthings, namely, ______[specify each item, i.e., dolls, board games; gymnastic and sporting articles, namely, ____________[specify each item, i.e., gymnastic apparatus, gymnastic horizontal bars, gymnastic parallel bars and sports balls], toy model vehicles, playing cards”;

 

International Class 34:  “Smokers’ articles, namely, _____ [specify each item, i.e., smokeless tobacco, smoking pipe cleaners, smoking pipes, smoking tobacco], cigarette lighters not of precious metal; matches”;

 

The wording “and related goods” in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.  The wording “not included in other classes” is indefinite and must be deleted. 

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of  Goods and Services at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

Multiple Class Application

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods/services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

Filing Bases

 

If applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce under Trademark Act Section 1(b) as the sole basis for registration, with the claim of priority under Section 44(d), then applicant should so advise the trademark examining attorney.  TMEP §§806.02(f) and 806.04(b).  If applicant chooses to do so, this Office will approve the mark for publication without waiting for applicant to submit a copy of the foreign registration, once all other outstanding issues are resolved.  Moreover, while the application may be approved for publication, the mark will not register until after an acceptable allegation of use has been filed.

 

If applicant does not indicate otherwise, this Office will presume that applicant wishes to rely on the foreign registration as an additional basis for registration and will require applicant to submit the copy of the foreign registration and, if appropriate, an English translation signed by the translator.  TMEP §§1004.01 and 1004.01(b).

 

Miscellaneous

Change of Address - Applicants may now file changes of correspondence address via a new form on TEAS.   Address changes may be performed on up to 20 cases at a time.  The Trademark Office strongly encourages applicants to use this time-saving form which is available online at: http://eteas.gov.uspto.report/V2.0/ca200/WIZARD.htm

 

Status Inquiry – Applicants may retrieve information about pending and registered trademarks from the USPTO’s database by simply entering a valid trademark serial number or registration number at:  http://tarr.uspto.gov.

 

Additionally, applicants may contact the Trademark Assistance Center at:  703-308-9000.

 

If you need information regarding the application process or applying for a Trademark, please access other resources on the Trademark Web page such as: Frequently-Asked Questions or Basic Facts about Trademarks.  More detailed information is available in the Trademark Manual of Examining Procedure and the Acceptable Identification of Goods and Services Manual. 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

/Leslie L. Richards/

Trademark Examining Attorney

Law Office 106

703-308-9106 ext. 172

703-746-8106 fax

 

 

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm